Further to our October 22, 2015 post, on November 13, 2015, ALJ Thomas B. Pender issued the public version of the Initial Determination (“ID”) (dated October 22, 2015) inCertain Windshield Wipers and Components Thereof (Inv. No. 337-TA-928/937) (due to the size of the ID, we have split it up into part 1 and part 2).  Please further note that Oblon represents Complainants in this matter.

By way of background, the investigation is based on July 25, 2014 and October 15, 2014 complaints filed by Valeo North America, Inc. of Troy, Michigan and Delmex de Juarez S. de R.L. de C.V. of Mexico (collectively, “Valeo”) alleging violation of Section 337 by Trico Products Corporation and Trico Componentes SA de CV (collectively, “Trico”) in the importation into the U.S. and sale of certain windshield wipers and components thereof.  See our August 1, 2014August 28, 2014October 16, 2014November 19, 2014December 15, 2014, and July 7, 2015 posts for more details on this investigation. 

In the ID, ALJ Pender found that Trico violated Section 337 through the importation and sale of certain windshield wipers and components thereof that infringe Valeo’s U.S. Patent No. 7,937,798 (the ‘798 patent).  However, the ALJ found no violation with respect to Valeo’s U.S. Patent No. 7,891,044 (the ‘044 patent).

With respect to the importation requirement, ALJ Pender found that such requirement was satisfied, rejecting Trico’s argument that its “maquiladora” operation did not constitute actionable importation into the U.S.

Regarding domestic industry, ALJ Pender found that Valeo satisfied the economic prong of the domestic industry requirement for both asserted patents.  The ALJ accepted Valeo’s argument that the relevant industry for the economic prong analysis includes the entire wiper system (i.e., the blade, arm, motor, and linkage) because the various components of the entire wiper system are essential to Valeo’s ability to exploit the patented technology.  Based on this finding, the ALJ concluded that Valeo established quantitatively and qualitatively significant investment in employment of labor or capital through its design, development, testing, and quality control activities in the U.S.  The ALJ further concluded that Valeo established quantitatively and qualitatively significant investment in plant and equipment through its investments in facilities and equipment in the U.S.

ALJ Pender further found that Valeo satisfied the technical prong of the domestic industry requirement for both asserted patents.  With respect to the ‘798 patent, Trico did not contest that Valeo satisfied the technical prong.  With respect to the ‘044 patent, ALJ Pender accepted Valeo’s argument that it satisfied the requirement because the purchasers of its aftermarket blades are instructed to and do create wiper arm-blade assemblies covered by claims of the ‘044 patent.  ALJ Pender also noted that Valeo satisfied the requirement with respect to the ‘044 patent because Valeo sells complete wiper systems (including arms) to OEMs.

With respect to claim construction, ALJ Pender agreed with Valeo that “receiving portion,” “mid-portion,” “first part,” “second part,” “receiving members,” “blade support element,” “intermediate element,” and “back” should be given their plain and ordinary meanings and essentially agreed with Valeo’s proposed construction for “locking tongue(s).”

As to the claim language “the end portion of the wiper arm and the connecting element can pivot with respect to each other about the first location until said securing portion secures the second part of the end portion of the wiper arm” in claim 1 of the ‘798 patent, ALJ Pender agreed with Valeo that this means that the claim excludes products that require a linear motion to reach a final assembly position, but does not exclude products that allow for linear motion at an earlier point in the assembly process.

With respect to infringement, ALJ Pender found that all of Trico’s accused products infringe claims 1, 7, 10, 12, and 15 of the ‘798 patent.  In particular, while Trico’s products may require linear motion, such linear motion may occur before the connecting element is pivoted onto the wiper arm, and thus the accused products can be pivoted to a secured position in accordance with the language of ‘798 claim 1.  However, ALJ Pender found that Trico’s accused products are not intended to be installed in a “toe-heel” fashion, but rather only in a “heel-toe” fashion.  Nevertheless, such products still infringe the asserted claims of the ‘798 patent because such claims cover heel-toe installation.  ALJ Pender also found that the accused products include a mid-portion as claimed, both literally and under the doctrine of equivalents, and thus infringe claims 7, 10, 12, and 15.

ALJ Pender also found that Trico’s accused products do not infringe the asserted claims of the ‘044 patent because such claims require toe-heel installation, but Trico’s accused products are intended to be installed in a heel-toe fashion.  The ALJ further found that, while Trico’s exhaustion and permissible repair defenses for the ‘044 patent were moot in light of his non-infringement finding, such defenses would fail as a matter of law.

Regarding validity, ALJ Pender found that Trico had failed to show that the asserted patents are invalid as anticipated by either Valeo’s Gen II connector or Valeo’s Gen IIB connector.  With respect to the Gen II, the ALJ found that such connector is not covered by the claims of the asserted patents because it requires a linear movement to reach a final assembled position.  With respect to the Gen IIB, the ALJ found that Trico had failed to prove by clear and convincing evidence that such connector was in fact offered for sale or in public use before the critical date.  Accordingly, ALJ Pender determined that the asserted patents had not been shown to be invalid.

With respect to remedy, ALJ Pender recommended that the Commission issue a limited exclusion order against Trico.  However, the ALJ recommended against granting a cease and desist order against Trico, and recommended that the bond during the 60-day Presidential review period be set at zero.